Trademark Outline

Trademark Outline
Week One
Theories of trademark protection; subject matter of trademarks
Borchard Excerpt (pg. 16). A trademark is defined as:
A word, logo, or package design, or a combination of them, used by a manufacturer or merchant to identify its goods and distinguish them from others.
* Federal trademark protection was originally attempted to be brought under the IP clause. However, this failed, and now the basis for federal regulation is the Commerce Clause.
* Note that trademark law reduces search costs (according to Posner), but may also promote so-called “persuasive” advertising, which, according to Brown, is socially wasteful.
* What are the limits on trademark protection?
1) They cannot be ordinary looking; they must be “distinctive”. Consumers must be able to associate the mark with the product/service.
2) They cannot be too generic. For example, aspirin became so popular that everyone called acetylsalicylic acid “aspirin”, and thus to have to remove this word from the common lexicon would be too onerous to society.
3) They cannot be functional, for this is the realm of patent.
* Recall, the categories of distinctiveness: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful.
* Note that Generic marks are never protectable, and that, absent secondary meaning, neither are Descriptive marks.
*Note that any higher category can become a Generic mark from public use. Some examples include Kleenex, band-aid, thermos, escalator, aspirin, etc.
* The devolution into the Generic category is a particular problem with products coming off-patent.
Kellogg Co. v. National Biscuit Co. (pg. 44). Here, the SC holds that the term “shredded wheat” is not protected because it is too generic. Further, the “pillow” shape of the cereal is not a protectable mark as it is functional in nature. Note that the court suggests that the form might also be generic.
Coca-Cola v. Koke Co. of America (pg. 49). Here, Coca-Cola’s mark is valid b/c it has obtained secondary meaning. Othwerwise, it would (mis)descriptive, and thus not entitled to protection.
* Note that slogans are specifically allowed as trademarks after Marzall.
Peaceable Planet v. Ty, Inc. (pg. 52). Here, the argument is over whether or not first names are registrable as marks. A name which is “primarily” a surname is not registrable under 15 USC § 1052. However, there is no statute about first names. Thus, the outcome is that, unless barred for some other reason, first names are registrable.
* Note that the following marks cannot be registered under § 2:
a) Immoral, deceptive, scandalous, or disparaging marks
b) U.S. or foreign insignia
c) Name, portrait, or signature w/o consent
d) Confusingly similar to a mark already in existence
e) Marks which are:
1) Descriptive or deceptively misdescriptive
2) Geographically descriptive, except regional origin under § 4
3) Geographically deceptively misdescriptive
4) Primarily a surname
5) Functional
Week Two
Distinctiveness; secondary meaning; trade dress; competition and preemption; functionality
Abercrombie v. Hunting World (pg. 78). Note the higher categories of trademark protection.
1) Fanciful- The word is made-up, and had no prior existence. This is the highest level. For example, Exxon.
2) Arbitrary- The word has no logical connection to the product/service. For example, Apple Computers.
3) Suggestive- The word “requires imagination, thought or perception to reach a conclusion as to the nature of the goods”. For example, Lazy Boy Furniture.
4) Descriptive- The word merely describes what the product does. These terms are not protected without a showing of secondary meaning.
5) Generic- The word is simply the common term for that item. These terms are never protectable.
In the Matter of the Application of Quik-Print Copy Shops, Inc. (pg. 82). Here, the mere fact that the copy shop spelled the title Quik-Print, rather than Quick-Print does not save it. Phonetic spelling may still be descriptive, as it is in this case.
* Note the site, sound, and meaning test. Confusing similarity wrt any of these criteria is enough for infringement.
In re Oppedahl & Larson (pg. 84). As in Quik-Print, minor alterations do not make something inherently distinctive. Patents.com does not remove the name from the descriptive realm when referring to a site name that tracks patents.
American Waltham Watch v. U.S. Watch (pg. 87). Here, the issue is geographical indication. Whatever the decision here, note the modern rules as codified in § 2 of the Lanham Act.
International Kennel Club of Chicago v. Mighty Star (pg. 89). Here, it seems unclear whether or not “International Kennel Club” has acquired such meaning as to rise above merely the descriptive level (the court says it has). Note the related issue of actual infringement, where the case appears to show ample evidence of actual confusion.
Rock & Roll Hall of Fame v. Gentile Productions (pg. 96). Here, there are all kinds of problems:
1) They’re not using the building as a trademark (this is really all they say in our excerpt)!
2) The building is not really a mark, it is the actual thing. There is no accompanying good/service.
3) It’s functional.
4) It is not copyrightable, and in fact, Gentile almost certainly has a copyright in his photo. Thus, this would be a massive clash of IP rights.
5) Although the design is clearly distinctive, this fact alone does not automatically equal a high level of trademark protection.
Qualitex v. Jacobson Products (pg. 63). Here, Qualitex sues over Jacobson’s use of the green-gold color it claims it owns. The underlying product is dry-cleaning pads. Ultimately, the SC declares that color may be sufficient, on its own, to become a trademark. Note that it has to have acquired secondary meaning. However, it notes that you could defend on a functionality basis (ie. I have to make the beer bottles brown b/c it protects against UV light). Colors as marks cannot have a restraint of trade effect.
* Note that scents, textures, and sounds have been successfully allowed. Tastes have not yet been allowed. You need to meet the same standards of source designation and distinctiveness (either inherent or through secondary meaning).
* Trade Dress is the “total image and overall appearance”.
Two Pesos v. Taco Cabana (pg. 481). Here, the jury finds the trade dress (packaging) of Taco Cabana inherently distinctive, but without secondary meaning. It therefore gives damages to Taco Cabana. This is affirmed by the 5th circuit, and now by the SC.
* How do you get inherently distinctive w/o secondary meaning? It would have to be so “over-the-top” as to be impossible to replicate without deliberately doing so, but at the same time, not well known enough to be directly associated with that entity. But if it’s so “over-the-top”, how do you not get secondary meaning?
* Note that Two Pesos caused the lower courts fits. Do you also apply the 5 categories for trademarks to trade dress now?
Wal-Mart Stores v. Samara Brothers (pg. 489). Here, the SC rules that for product design to be inherently distinctive, they must have acquired secondary meaning. Isn’t this at odds with Two Pesos? Is the product feature v. product packaging distinction applicable here? Is it ever applicable? Scalia might be stretching things here b/c he is worried about “strike” suits whenever the first firm into the market could deter competitors via a trademark suit. However, this might also be a problem in Two Pesos. If Two Pesos was a “high” for trademark protection, Wal-Mart seems to be declining from that point.
Cheney Bros. v. Doris Silk Corp. (pg. 3). Here, the plaintiff wants protection from cheaply made copies, apparently under a “sweat-of-the-brow” argument. It analogizes to AP v. INS, but the court doesn’t buy it. If the product is not copyrightable, there is no competitive protection via trademark. This is essentially “field” preemption except that what the plaintiff wants is a federal remedy.
NBA v. Motorola (pg. 12). Here, the SC revises the AP v. INS holding, and applies the following test for protection of information:
1) Plaintiff gathers or generates information at a cost.
2) The information is time-sensitive.
3) Defendant’s use is free-riding.
4) Defendant is in direct competition with plaintiff.
5) The free-riding threatens the quality or very existence of the information.
Sears, Roebuck & Co. v. Stiffel Co. (pg. 5). Stiffel sues for infringement of their design patent, and for trade related infringement on lamps they sell. They lose on the design patent, but win on the trade related material. However, the SC strikes this down as preempted by federal patent law. The rationale here is that functional considerations cannot be marked, and are already governed by patent law.
Compco. Corp. v. Day-Brite Lighting, Inc. (pg. 8). Here, even with secondary meaning, the court holds that if the design is not patentable (design patent), or copyrighted, then it may be copied. Note that in light of Sears and Compco, much of the trademark litigation goes to the federal courts under the Lanham Act.
* Note that I’m not sure if Compco would survive today. If the features having secondary meaning aren’t functional, why can’t they serve as a mark? Note also that asking for/defending based on a design patent and trademark at the same time is a really stupid strategy.
Bonito Boats v. Thunder Craft Boats (pg. 9). Here, the SC again strikes down the state laws which purport to grant protection to non-patentable boat hull designs. While this is not the heyday of Sears and Compco, the court nevertheless uses preemption again. Here, the incorporation of the “functionality” rationale is more explicit.
* Note the response to Bonito Boats by Congress. They pass the Vessel Hull Design Protection Act. This goes against the grain of Cheney Bros., but you also have semi-conductor protection (and maybe even fashion design). Federal protection for fashion would fly in the face of Cheney Bros.
* Note that functional features are not markable, and if a feature is both source designating and functional, then the marking aspect loses.
Tie Tech v. Kinedyne (pg. 496). Here, the distinctive features are clearly functional (safety type blade and grip conforming handle. Thus, those elements are not protectable as a mark.
TrafFix Devices v. Marketing Displays (pg. 498). Here, the SC reviews a 6th circuit decision about traffic road signs. The spring system at issue has just come off patent, but somehow the former patentee convinces the 6th circuit that formerly patented features are not now utilitarian in any way that matters. How does the 6th circuit screw this one up???
Au-Tomotive Gold v. Volkswagen of America (pg. 506). This case involves so-called “aesthetic functionality”. This doctrine suggests that a trademark has become so desirable that it is now no longer a trademark alone, but it is actually a good itself. Therefore, the mark is now functional, not symbolic of source. This is correctly rejected by the 9th circuit. Such an argument is a blatant attempt to get around the difficult hurdle of proving that the mark is, in fact, generic.
Pagliero v. Wallace China (pg. 509). This is the exact opposite of VW (above). Here, the aesthetic features really are functional. People like china with fancy patterns. Note that if Wallace would have been able to show actual source designation/use as a mark, they would have won.